Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Election
Applicant’s response received on 09/22/2026 and the election without traverse of the design designated as Embodiment 1 (Reproductions 1.1-1.7) is acknowledged.
Embodiments 2 and 3 (Reproductions 2.1-3.7) have been withdrawn from further consideration as being for the non-elected designs. 37 CFR 1.142(b)
Also acknowledged is applicant's cancelation of Reproductions 2.1-3.7 and their associated descriptions.
Claim Refusal - 35 USC 102(a)(1)
The claim is refused under 35 USC 102(a)(1) as clearly anticipated by NPL reference Post by surfaceworks by surfaceworks, (Citation U on PTO-892 mailed 07/29/2026, available July 8, 2024) because the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
The appearance of the surfaceworks design is substantially the same as that of the claimed design. The ordinary observer test is the sole test for anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009). The two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives, to purchase an article having one design supposing it to be the other. Door-Master Corp. v. Yorktowne Inc., 256 F3d.1308 (Fed. Cir. 2001) citing Gorham Co. v. White, 81 U.S. 511, 528 (1871). The comparison takes into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as “minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement,” (Litton, 728 F.2d at 1444), so too minor differences cannot prevent a finding of anticipation. Int'l Seaway supra.
Note also that functional or structural characteristics cannot support design patentability. Static Control Components Inc. v. Lexmark International Inc. (Sixth Cir. 2012); In re Garbo 129 USPQ 72 (1961).
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
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Claim Rejection - 35 U.S.C. § 103
The claim is rejected under 35 U.S.C. 103 as being unpatentable over NPL reference Post by surfaceworks by surfaceworks, (Citation U on PTO-892 mailed 07/29/2026, available July 8, 2024).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
surfaceworks has an overall appearance with design characteristics that are visually similar to those of the claimed design, such as: a flat, rounded rectangle top; adjustment lever on the front right side; unitary adjustable pedestal support which is a rounded rectangular shape and positioned centrally towards the back of the top and base; a flat, rounded rectangle base.
The claimed design differs from surfaceworks in that base is a dark contrasting color instead of a light contrasting color.
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the present claimed invention to modify surfaceworks by substituting the color/material finish of the base because such a modification is no more than a simple substitution of one known design element for another. Moreover, such substitution of one known design element with another within the same field of endeavor would have been within the skill of an ordinarily skilled designer; and in particular is evidently known to the designer of the surfaceworks as the same style of desk is shown with different and contrasting colors/material finishes in the background of the image. Please see the following illustration. Further, it has been well established that the patentability of a design may not rest on color alone. In re Iknayan et. Al. 124 USPQ 507 (1960). In re Cohn 464 O.G. 481; 27 USPQ 412 (1935). In re Mains 461 O.G. 254; 77 F(2d) 533; 25 USPQ 407 (1935). In re Hall 1934 C.D. 238; 21 USPQ 19 (1934).
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“[T]his court has sanctioned the practice of nominally basing rejections on § 103 when, in fact, the actual ground of rejection is that the claims are anticipated by the prior art... The justification for this sanction is that a lack of novelty in the claimed subject matter, e.g., as evidenced by a complete disclosure of the invention in the prior art, is ‘ultimate or epitome of obviousness’” Black and Decker, Inc., etal. v. Pittway Corporation, 231 USPQ 252 (DC NI11 1986).
Conclusion
The claim stands refused under 35 USC 102(a)(1) and 35 USC 103, as set forth above.
The references cited, but not applied, are considered cumulative art related to the claimed design.
Hague - Reply Reminder
Applicant is reminded that any reply to this Refusal must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Discussion of the Merits of the Application
All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP 713. The examiner will not discuss the merits of the application with applicant' s representative if the representative is not registered to practice before the USPTO. Appointment as applicant' s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.
Telephonic Interviews
A telephonic interview may only be conducted with an attorney or agent registered to practice before the USPTO (“registered practitioner”) or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).
The registered practitioner may either be of record or not of record. To become “of record”, a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 “Power of Attorney to Prosecute Applications Before the USPTO”, available at
https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012, may be used for this purpose. See MPEP 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an “Applicant Initiated Interview Request Form” (PTOL-413A) (available at the USPTO web page indicated above). See MPEP 405. For acceptable ways to submit forms to the USPTO, see “When Responding to Official USPTO Correspondence” below.
Notes on Correspondence
The merits of the application may not be discussed via email unless an appropriate authorization for email communication is placed in the U.S. application file at the USPTO. Replies to office actions may not be sent via email. For those applications where applicant wishes to communicate with the examiner via Internet communications, e.g., email or video conferencing tools, the following is a sample authorization form which may be used by applicant:
"Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR
1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file."
Please see MPEP 502.03 II (Article 5) for more details.
Responding to Official USPTO Correspondence
The USPTO transacts business in writing. All replies must be signed in accordance with 37 CFR 1.33(b). Pursuant to 37 CFR 1.33(b)(3), a reply submitted on behalf of a juristic applicant must be signed by an attorney or agent registered to practice before the USPTO. Applicants may submit replies to Office actions only by:
⦁ Online via the USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only) https://www.uspto.gov/patents/apply
⦁ Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313‐1450
⦁ Facsimile to the USPTO's Official Fax Number (571‐273‐8300)
⦁ Hand‐carry to USPTO's Alexandria, Virginia Customer Service Window
For additional information regarding responding to office actions see:
https://www.uspto.gov/patents/maintain/responding-office-actions
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Yosinski whose telephone number is (571) 272-9481. The examiner can normally be reached Monday-Friday 10AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Rempfer can be reached at (571) 270-0248. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.S.Y./Examiner, Art Unit 2932
/JENNIFER L REMPFER/Supervisory Patent Examiner, Art Unit 2932
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